T 0655/21 - The EU as opponent in an unusual case

Key points

• The opponent is "The European Union, represented by the European Commission". The opponent is the sole appellant. The patent is directed to "A satellite (105) for satellite communication"
• "Reasons 20 to 22.3.2 of the appealed decision dealt with the issue of novelty as to the subject-matter of granted claim 1 in view of no fewer than seven different prior-art documents. "
• "The statement of grounds of appeal only addressed the matter of novelty in a substantiated manner. It did so in view of a single document (i.e. prior-art document D26). This document was not among the prior-art documents which the appealed decision dealt with. In fact, it was not even admitted into the proceedings [i.e. held inadmissible] by the opposition division. This means that the scope of the appeal lodged by the appellant was uncommonly restricted."
• The statement of grounds was submitted by a patent attorney firm.
• "from the minutes of the first-instance oral proceedings and from Reasons 16.4 of the appealed decision, it is apparent that the opposition division studied D26 "for quite some time". Therefore, any further time involvement by the board in this regard could only have reinforced a legitimate expectation on the part of the appellant that the document was already in the proceedings. Moreover, in the board's assessment, document D26 was not more relevant than D18 which was already in the proceedings. " 
• "For the sake of procedural economy, the board considered it more expedient to avoid an analysis and a discussion on whether D26 had already been implicitly admitted or should have been admitted already in the opposition proceedings, as well as an in-depth analysis of its contents. Instead, it was more appropriate to examine, in its preliminary opinion, another substantive aspect with which the appealed decision was concerned, namely the matter of inventive step starting out from D18 as dealt with in Reasons 23 to 25.1 of the appealed decision. In so doing, the board may have contributed to making the circumstances of the appeal case "exceptional". On the other hand, it upheld the EPO's responsibility towards the public not to maintain invalid patents. It also, in its view, simplified the current proceedings."
• " Against this approach, however, the proprietor raised the following objection: the only ground on which the opponent had appealed was that claim 1 lacked novelty with respect to document D26. Therefore, the board should have not extended the scope of the appeal proceedings to documents and attacks which were part of the opposition proceedings but not of the appeal proceedings."
• "the board cannot see any legal basis for such a limitation, neither in the text of the EPC nor in the Rules of Procedure of the Boards of Appeal (RPBA). Pursuant to Article 114(1) EPC, the EPO (and thus also the Boards of Appeal) shall not be restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.  "
• "following the board's communication under Article 15(1) RPBA 2020, the opponent had amended its appeal case (see point 2.1 below)."
• " In its reply to the board's preliminary opinion, the appellant agreed with the board that the subject-matter of claim 1 of the main request did not involve an inventive step when starting out from document D18."
• " the board decided to admit the appellant's objection as regards lack of inventive step starting out from D18 against claim 1 of the main request into the appeal proceedings."
• "It is therefore not credible that features (a) to (i) bring about any kind of "flexibility", let alone an "increased flexibility". Thus, contrary to what is set out in Reasons 25.1 of the appealed decision, features (a) to (i) do not contribute to solving an objective technical problem. Consequently, they cannot contribute to an inventive step (cf. G 1/19, Reasons 49, last two sentences). Instead, they relate mainly to the definition of the satellite's processing and the processing of the beamforming networks as a "black box" (see e.g. T 2271/18, Reasons 2.1), with several general input parameters such as "weight sets", "transmit/receive weight vectors", "sequential dwell times", "pathway gains" and generic output parameters such as "uplink and downlink beam signals" in a static rather than an adapted or dynamic way."
• "For the reasons set out above, the subject-matter of claim 1 of the main request does not involve an inventive step (Article 56 EPC)."
• "the board decided to admit auxiliary request 1 into the proceedings."
• " The admittance into the proceedings of auxiliary request 1 and of document D26 represents a considerable change in the facts and claim requests underlying the present appeal case."
• The case is remitted.

EPO 

You can find the link to the decision after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t210655eu1